The Hong Kong patent system is essentially a re-registration patent system. Although Hong Kong is not a favourable forum for patent litigation, having a patent granted in Hong Kong could provide the patentee with substantial commercial advantages. At the very least, Hong Kong has a population of almost 8 million people, which is higher than that of some European countries.
However, there are a number of issues that one could consider for the following questions:
- How can I obtain enforceable patent rights earlier for my invention in Hong Kong?
- I have UK, EP, and CN applications directed to the same invention. Which one should I choose to pursue a Hong Kong standard patent? Why?
- My UK, EP, and CN patents will all be granted. Can I choose the one with the broadest scope for Hong Kong?
This article seeks to provide general guidance to the answers of the above questions. But first let us have a brief review of the Hong Kong patent system.
Hong Kong patent rights must be pursued separately from China
First of all, one should note that due to the 'One Country, Two Country' systems, a Chinese patent has no effect in Hong Kong, and vice versa.
Types of Hong Kong patents
Hong Kong standard patent
A Hong Kong standard patent is obtained through a two-stage application process. The first stage requires the filing of a request to record a pending application in the United Kingdom, Europe (UK) or China (a designated application). In another words, an application in Hong Kong for a standard patent cannot be filed if there is no application for a patent in the UK, EP (UK) or CN.
The second stage of the filing of a request for registration and grant in Hong Kong can only be filed when the UK, EP(UK) or CN application, on which the Hong Kong standard is based, is granted (the designated patent). However, the designated patent utilized in the second stage must correspond to the designated application in the first stage. For example, if a UK designated application is utilized in the first stage, one cannot utilize the CN designated patent in the second stage, even if both are directed to the same invention. The term of a Hong Kong standard patent is 20 years from the filing date of the basic UK/EP(UK)/CN designated application. For the ease of discussion, a Hong Kong standard patent based on a Chinese patent will be termed 'CN-based Hong Kong patent' below. Similarly, 'UK-based Hong Kong application' refers to a Hong Kong standard patent application based on a UK patent application, and so on.
Hong Kong short-term patent
Other than a Hong Kong standard patent, one may file an application for a Hong Kong short-term patent to acquire earlier enforceable rights. The term of a Hong Kong short-term patent is eight years from its filing date, and the rights are equivalent to a granted standard patent. However, a Hong Kong short-term patent will not be examined substantively and will be granted when the Hong Kong Patents Registry is satisfied that all formality requirements are met. More details of Hong Kong short-term patent will be discussed in the following section.
How can I obtain enforceable patent rights earlier for my invention in Hong Kong?
If obtaining earlier grant is very important (for example, for advertising purposes), one could pursue a Hong Kong short-term patent in parallel with the Hong Kong standard patent. Unlike utility models in China and Germany, a Hong Kong short-term patent could be directed to any subject-matter, including methods, chemical compounds, and compositions.
Moreover, a Hong Kong short-term patent is usually granted within six to 18 months from the Hong Kong filing date. However, please note that a Hong Kong short-term patent is usually filed directly in Hong Kong. Therefore, if priority is claimed, this Hong Kong short-term patent application should be filed within 12 months from the earliest priority date.
As discussed above, the rights of a Hong Kong short-term patent are the same as those of a Hong Kong standard patent. Most importantly, the Hong Kong Patents Ordinance allows the same patentee to own Hong Kong short-term and standard patents directed to the same invention at the same time according to section 91(1)(h) of the Ordinance, which can be found below for completeness: www.legislation.gov.hk/blis_ind.nsf/e1bf50c09a33d3dc482564840019d2f4/a8312a1f90b0590b482564f2000c3758?OpenDocument [Ed.: Instead of those awful 121 characters, try http://tinyurl.com/6em6ok]
Having said that, these advantages of obtaining a Hong Kong short-term patent are diminished if the applicant is going to pursue a UK patent, which would usually be granted relatively quickly (within one to three years from the UK filing date). The applicant could then obtain the UK-based Hong Kong patent quickly. This UK route has become attractive recently, particularly in the light of the recent substantial increase in the EP excess claim fees, which shifts the balance from filing an EP patent application to filing national applications in individual European countries out of cost considerations.
I have UK, EP, and CN applications directed to the same invention. Which one should I choose to pursue a Hong Kong standard patent? Why?
The writer would generally advise an applicant to base a Hong Kong application on a corresponding UK or EP(UK) application. There are many reasons of this preference, several of which are discussed below.
History of the Hong Kong Patents Ordinance
First of all, the Hong Kong Patents Ordinance was taken virtually word by word from the corresponding UK Patents Act 1977. This allows the existing case-law in the UK to be used for guidance, although not as binding precedent, in Hong Kong. As generally expected, there are few patent cases in Hong Kong. The availability of the case-law in the UK, where the Hong Kong legal system is based on, has a significant effect on the judgments in Hong Kong. The only likely difference would be where an interpretation in a case in the UK is overly influenced by a desire to conform to requirements of the European Patent Convention rather than the pure wording of the UK legislation alone. In those instances, there may be a suggestion that Hong Kong has no such constraints and a judge may be convinced to move away from the corresponding interpretation in the UK. However, the writer considers it unlikely that any judge in Hong Kong has the depth of experience sufficient to provide rulings in a departing significantly away from that suggested by the UK cases. Therefore, a UK/EP-based Hong Kong application could provide an applicant with higher degree of certainty in determining the protection scope of the future granted claims in Hong Kong.
Variation in Prosecution of Chinese Patent
It is the writer's experience that the prosecution of a Chinese patent application is less predictable than that in the UK or Europe. The improvements of the Chinese Patent Office on patent prosecution are remarkable judging from the relative short history (23 years) of the existence of Chinese patent law. However, partly due to the high turnover rate of Chinese examiners, the whole prosecution process lacks continuity and uniformity. This is less likely to happen in the UK or Europe due to the availability of a relatively mature case-law system.
Additionally, the scope or even the validity of Chinese patents can easily be affected by translation errors, which could be disastrous once the patent is granted as post- grant amendments are very restrictive in China. Without amending the granted CN patent, it is almost impossible to amend the corresponding Hong Kong patent due to the lack of substantive examination capability of the Hong Kong Patents Registry, who will solely rely on the designated patent offices to examine the amendments.
Validity and enforcement of patent rights in Hong Kong
Based on the above, it is the writer's view that it would be inadvisable to base a patentee's rights in Hong Kong on a Chinese patent for a number of reasons, unless the Chinese patent was the only patent on which a Hong Kong patent could be based, that is, there was no corresponding UK or European application.
Firstly, any proceedings in Hong Kong are required to be conducted in Chinese for a CN-based Hong Kong patent, which would often cause great inconvenience to those not conversant in the language. More importantly, this would have serious implications during any proceedings in Hong Kong due to language and legal inconsistencies. The Hong Kong Patents Ordinance draws heavily upon UK patent case-law and precedent. Terms and language having particular meanings in English are well established under such law, as well as breadth and validity of claims, fair basis, clarity and so on.
Further, when an English claim is translated into Chinese, it is not unusual that the meaning of patent languages having specific interpretations under the UK case-law system could be altered or may even disappear in the Chinese version. For example, the plural meaning of many nouns in English disappears when these nouns are translated into Chinese directly. This causes further ambiguity in the interpretation of the scope of a Chinese claim.
Furthermore, the translation errors in Chinese patents originating in English or other languages further contribute to the lack of certainty with respect to the interpretation and claim scope of the corresponding Hong Kong patent. Thus, for claim scope interpretation and for substantive matters not significantly departing from the established UK case-law, there would be a significantly higher degree of confidence and certainty as to how the claims of a patent would be construed by the court.
Thus, there exists much uncertainty as to how the actual scope of claim a CN-based Hong Kong patent would be construed by a Hong Kong court due to the significant differences between the Chinese and English languages. Accordingly, the writer would prefer instigating any proceedings or enforcement-related activities based upon a UK/EP-based Hong Kong patent instead of a CN-based one, whenever possible.
My UK, EP, and CN patents will be granted. Can I choose the one with broadest scope for Hong Kong?
It is the writer's experience that having a patent granted in Hong Kong could provide the patentee with substantial commercial advantages, even though the patentee is unlikely to litigate its patent in Hong Kong. In such cases, it would be beneficial to the patentee to have a patent granted earlier and with broader scope.
As such, if an invention is important to the applicant, the applicant may wish to record all of the corresponding UK, EP, and/or CN applications in Hong Kong (or any two of them). The Hong Kong Patents Ordinance allows an applicant to do so.
However, as these EP, UK, and CN patents may be granted at different times and with different scopes, the applicant can acquire earlier enforceable rights in Hong Kong than relying on only one application. The applicant could also choose to retain the one with the broadest scope among these EP, UK, and CN patents in Hong Kong. If so desired, the applicant could retain all of the UK/EP/CN-based Hong Kong patents if the UK, EP, and CN patents have different scopes.
One obvious downside of the above approach is that double or triple costs will be incurred in Hong Kong with respect to filing and maintaining the application. However, these costs are relatively minimal.
Although the Hong Kong patent system is essentially a re-registration patent system, there are strategies that can be implemented so as to obtain earlier enforceable rights. An applicant could obtain enforceable rights some four to six years earlier in Hong Kong than if relying solely on the EP or CN patent. It is also possible to choose to retain the one with the broadest scope among these EP, UK, and CN patents in Hong Kong. Such strategies may be useful for particular types of technology requiring earlier enforceable rights (for example, telecommunication or cosmetics-related inventions), or broad protection scope (for example pharmaceuticals or chemicals).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.